Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88261375 GENERATION AI NEXUS (Stylized and/or with Design, see http://uspto.report/TM/88261375/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Attached as a PDF.

EVIDENCE
Evidence in the nature of PDF of Response arguments, Exhibit A (no results dictionary print-out for GENERATION AI), Exhibit B (dictionary print-out for GENERATION), Exhibit C (copies of TESS records) has been attached.
Original PDF file:
evi_208118161197-20191016145303205517_._2272.2300000_-OA_response_arguments.pdf
Converted PDF file(s) ( 9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Original PDF file:
evi_208118161197-20191016145303205517_.__A_Generation_ai___Definition_of_Generation_ai_at_Dictionary.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_208118161197-20191016145303205517_._2272.2300000_GENERATION_AI_Exhibit_B.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Original PDF file:
evi_208118161197-20191016145303205517_._2272.2300000_GENERATION_AI_Exhibit_C.pdf
Converted PDF file(s) ( 24 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Consulting services in the field of the design of computer software for use in the education industry, specifically software with Artificial Intelligence (AI) Machine Learning (ML) and Deep Learning (DL), data science, and statistical analysis and modeling capabilities; Consulting services in the field of design, planning, and implementation project management of computer software testing for use in the education industry; Consulting services in the field of design, selection, implementation and use of computer software systems for others; Consulting services, related to designing, creating, implementing and maintaining computer software for academic professionals to conduct research within an academic institution; Custom design and development of computer software for use in the education industry; Development of computer platform recorded on data media (software) designed for use in education; Custom design and development of AI, ML, DL, statistical analysis and modeling software for teaching and education purposes; Coordination services for events focusing on teaching AI, ML, and DL software development, planning, and programming skills; Consulting services related to curricula, teaching methods, and resources for teaching the principles and application of AI, ML, DL, data science, statistical analysis and modeling, and related fields; Research and development of software programming teaching methods; Research and development of teaching methods and course development in the fields of AI, ML, DL, data science, statistical analysis and modeling and related fields; Design, maintenance, development and updating of computer software; Storing, hosting, sharing, and communicating information related to educational programs focused on AI, ML, DL, data science, statistical analysis and modeling, and related fields; Hosting and sharing of software, code, and algorithms, and technical information for AI, ML, and DL applications, data science, statistical analysis and modeling and related fields
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Consulting services in the field of the design of computer software for use in the education industry, specifically software with Artificial Intelligence (AI) Machine Learning (ML) and Deep Learning (DL), data science, and statistical analysis and modeling capabilities; consulting services in the field of design, planning, and implementation project management of computer software testing for use in the education industry; consulting services in the field of design, selection, implementation and use of computer software systems for others; Consulting services, related to designing, creating, implementing and maintaining computer software for academic professionals to conduct research within an academic institution; consulting services related to designing, creating, implementing and maintaining computer software for academic professionals to conduct research within an academic institution; custom design and development of computer software for use in the education industry; Development of computer platform recorded on data media (software) designed for use in education; development of computer software platform recorded on data media designed for use in education; custom design and development of AI, ML, DL, statistical analysis and modeling software for teaching and education purposes; Coordination services for events focusing on teaching AI, ML, and DL software development, planning, and programming skills; design, maintenance, development and updating of computer software; Consulting services related to curricula, teaching methods, and resources for teaching the principles and application of AI, ML, DL, data science, statistical analysis and modeling, and related fields; electronic storage of information related to educational programs focused on AI, ML, DL, data science, statistical analysis and modeling, and related fields; Research and development of software programming teaching methods; hosting online web facilities for others for sharing and communicating information related to educational programs focused on AI, ML, DL, data science, statistical analysis and modeling, and related fields; Research and development of teaching methods and course development in the fields of AI, ML, DL, data science, statistical analysis and modeling and related fields; hosting online web facilities for others for sharing of software, code, and algorithms, and technical information for AI, ML, and DL applications, data science, statistical analysis and modeling and related fields.; Storing, hosting, sharing, and communicating information related to educational programs focused on AI, ML, DL, data science, statistical analysis and modeling, and related fields; Hosting and sharing of software, code, and algorithms, and technical information for AI, ML, and DL applications, data science, statistical analysis and modeling and related fieldsClass 042 for Consulting services in the field of the design of computer software for use in the education industry, specifically software with Artificial Intelligence (AI) Machine Learning (ML) and Deep Learning (DL), data science, and statistical analysis and modeling capabilities; consulting services in the field of design, planning, and implementation project management of computer software testing for use in the education industry; consulting services in the field of design, selection, implementation and use of computer software systems for others; consulting services related to designing, creating, implementing and maintaining computer software for academic professionals to conduct research within an academic institution; custom design and development of computer software for use in the education industry; development of computer software platform recorded on data media designed for use in education; custom design and development of AI, ML, DL, statistical analysis and modeling software for teaching and education purposes; design, maintenance, development and updating of computer software; electronic storage of information related to educational programs focused on AI, ML, DL, data science, statistical analysis and modeling, and related fields; hosting online web facilities for others for sharing and communicating information related to educational programs focused on AI, ML, DL, data science, statistical analysis and modeling, and related fields; hosting online web facilities for others for sharing of software, code, and algorithms, and technical information for AI, ML, and DL applications, data science, statistical analysis and modeling and related fields.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 041 for Coordination services, namely, organizing and arranging educational programs focusing on teaching Artificial Intelligence (AI), Machine Learning (ML), and Deep Learning (DL) software development, planning, and programming skills; consulting services related to curricula, teaching methods, and educational materials for teaching the principles and application of AI, ML, DL, data science, statistical analysis and modeling, and related fields; research and development of software programming teaching methods; research and development of teaching methods and course development in the fields of AI, ML, DL, data science, statistical analysis and modeling and related fields;
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

The applicant's current attorney information: Tracy-Gene G. Durkin. Tracy-Gene G. Durkin of STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C., is located at

      1100 NEW YORK AVENUE, N.W.
      WASHINGTON, District of Columbia 20005
      US
The docket/reference number is 2272.2300000.

The phone number is 202-371-2600.

The fax number is 202-371-2540.

The email address is tm@sternekessler.com

The applicants proposed attorney information: Tracy-Gene G. Durkin. Other appointed attorneys are Monica Riva Talley, Dana N. Justus, Ivy Clarice Estoesta, Lauriel F. Dalier, Shana L. Olson. Tracy-Gene G. Durkin of STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1100 NEW YORK AVENUE, N.W.
      WASHINGTON, District of Columbia 20005
      United States
The docket/reference number is 2272.2300000.

The phone number is 202-371-2600.

The fax number is 202-371-2540.

The email address is tm@sternekessler.com

Tracy-Gene G. Durkin submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: TRACY-GENE G. DURKIN. TRACY-GENE G. DURKIN of STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C., is located at

      1100 NEW YORK AVENUE, N.W.
      WASHINGTON, District of Columbia 20005
      US
The docket/reference number is 2272.2300000.

The phone number is 202-371-2600.

The fax number is 202-371-2540.

The email address is tm@sternekessler.com; tdurkin@sternekessler.com; jshirk@sternekessler.com; sarnold@sternekessler.com

The applicants proposed correspondence information: Tracy-Gene G. Durkin. Tracy-Gene G. Durkin of STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C., is located at

      1100 NEW YORK AVENUE, N.W.
      WASHINGTON, District of Columbia 20005
      United States
The docket/reference number is 2272.2300000.

The phone number is 202-371-2600.

The fax number is 202-371-2540.

The email address is tm@sternekessler.com; tdurkin@sternekessler.com; jshirk@sternekessler.com; sarnold@sternekessler.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Tracy Durkin/      Date: 10/16/2019
Signatory's Name: Tracy-Gene G. Durkin
Signatory's Position: Attorney of Record, Washington, DC Bar Member
Signatory's Phone Number: (202) 772-8660


Response Signature
Signature: /Tracy Durkin/     Date: 10/16/2019
Signatory's Name: Tracy-Gene G. Durkin
Signatory's Position: Attorney of Record, Washington, DC Bar Member

Signatory's Phone Number: 202-772-8660

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    TRACY-GENE G. DURKIN
   STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
   
   1100 NEW YORK AVENUE, N.W.
   WASHINGTON, District of Columbia 20005
Mailing Address:    Tracy-Gene G. Durkin
   STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
   1100 NEW YORK AVENUE, N.W.
   WASHINGTON, District of Columbia 20005
        
RAM Sale Number: 88261375
RAM Accounting Date: 10/16/2019
        
Serial Number: 88261375
Internet Transmission Date: Wed Oct 16 20:28:25 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191016202825
671314-88261375-610bc3f9d4fca1f47662d223
e9f3635b5dc8f3cd177568dc72da71fe579c9642
cf1-CC-28241058-20191016145303205517